Appeal 2007-0284
Application 10/454,564
particles blending with some droplets containing non-amino functionalized
particles in the hydrophobic (or oil) phase. (See Answer 4.)
PRINCIPLES OF LAW
With respect to claim interpretation:
[D]uring examination proceedings, “claims are given their
broadest reasonable interpretation consistent with the
specification. . . . [This] proposition ‘serves the public
interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified,’ In re
Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.
Cir. 1984), and it is not unfair to applicants, because ‘before
a patent is granted the claims are readily amended as part of
the examination process,’ Burlington Indus., Inc. v. Quigg,
822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir.
1987).”
In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
“Under 35 U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate the claim.” Gechter
v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997).
However, a limitation can be satisfied through inherency:
Where, as here, the claimed and prior art products are
identical or substantially identical . . . , the PTO can require
an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain
and compare prior art products.
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